Share on Facebook

Share on Twitter

Share on LinkedIn

Share on Email

Share More


Background

The term "geographic indication" (GI) refers to a designation given to a product that is unique to a specific region or area and is produced there. The quality of these goods is well-known. Simply by having the tag of belonging to that region, they are associated with a sense of legitimacy and trust.

TRIPS establishes minimum standards for the protection of geographical indications and additional protection for wines and spirits. Articles 22 to 24 of Part II Section III of the TRIPS mandate that WTO members provide minimum protection standards for geographical indications. India has enacted the Geographical Indications of Goods (Registration and Protection) Act, 1999, which took effect on September 15, 2003, and the Geographical Indications of Goods (Registration and Protection) Rules, 2002, to comply with its TRIPS obligations.

The following types of goods fall under the GI umbrella:

  • Agricultural for example, Basmati rice;
  • Natural for example, Makrana marble;
  • Handicraft or of any industry,for example, Kashmiri pashmina;
  • Foodstuff,for example, Dharwad pedha.

The goods mentioned above are easily linked to the location where they are produced or grown.

Important Definitions

Section 2 of the Act has all the important Definitions related to the Act. They are:

Section 2(c)– Application for Registration of a Geographical Indication – This includes the geographical indication for the goods it contains.

Section 2(e) –Business– Business, according to this section, includes trading, dealing, production exploitation, making or manufacturing, as the case may be, of the goods to which a geographical indication relates.

Section 2(i)–Divisional Application –A divisional application is created by dividing a single initial application to register a geographical indication into separate applications for different classes of goods.

Section 2(l) –Graphical Representation – This refers to the paper representation of a geographical indication for goods.

Section 2(o) – Opposition –Opposition to the registration of a geographical indication or an authorised user, as the case may be, is one type of opposition.

Section 2(s) –Renewal – It refers to and includes the renewal of a geographical indication by the registered proprietor or authorised user of a geographical indication, as the case may be.

Section 2(v) – Specification –It refers to the designation of goods for which a geographical indication has been registered or is being considered for registration.

Geographical Indications

Indications that identify a good as originating in the territory of a member, or a region or locality within that territory that Act as the geographical indicator of a well-defined quality product, a particular trade, or the originality of the goods produced having geographical origin are known as Geographical Indications, according to Article 22(1) of the TRIPS Agreement.

According to Section 2(e) of the (Indian) Geographical Indications of Goods (Registration and Protection) Act, 1999, "geographical indication" refers to an indication that identifies agricultural, natural, or manufactured goods as originating or manufactured in a country's territory, or a region or locality within that territory.In this case, a given quality, reputation, or another characteristic of such goods is essentially attributable to its geographical origin. In the case of manufactured goods, one of the activities of either production, processing, or preparation of the goods takes place in such territory, region, or locality, as the case may be.

Benefits of Registration of Geographical Indication

Their names know goods made in a specific region. They have a connection to their place of origin no matter where they are sold. As a registered indication, they are protected in India as a matter of originality. It prevents others from using a Registered Geographical Indication without permission. Products or goods with the Geographical Indication mark on them that are exported from India protect the origin of the goods and identify where they were produced; this protection is only possible because of Geographical Indication, which boosts the economy of the origin country. With the help of Geographical Indication, product producers can sell more in quantity, allowing them to make more money.

Indian GI laws and Jurisdictions

GI registrations and goods are governed by the Geographical Indications of Goods (Registration and Protection) Act, 1999, and the Geographical Indications of Goods (Registration and Protection) Rules, 2002.

The Intellectual Property Appellate Board has jurisdiction over any case where the validity of a geographical indication's registration is questioned, according to Section 58(1) of the GI Act. Furthermore, Section 66 (1)(c) of the GI Act gives "any court inferior to a district court having jurisdiction to try the suit" the authority to hear infringement cases. Injunctions, nominal damages, and profits damages may be awarded at the judge's discretion, at the plaintiff's request, according to Section 67 of the GI Act. Section 55 of the Act also states that "no suit or other legal proceedings shall lie against any person in respect of anything done or intended to be done in good faith in pursuance of this Act."

The Geographical Indications Registry in Chennai has complete authority over GI goods in India, including their registration and application processes. The Intellectual Property Appellate Board (IPAB) is in charge of appeals. It is based in Chennai as well. According to the IPAB's website, it is the only tribunal in India with international clout. This was evident in the case of the Lahore Growers Association and Basmati rice (elaborated upon in later sections).

Registration of a Good as GI

The provisions for the registration of any GI are covered in Chapter 2 of the Geographical Indications of Goods (Registration and Protection) Act, 1999.

Types of Applications

  • Ordinary – Used to register a GI in India.
  • Convention – The registration of a geographical indication (GI) that has already been recognised in another country.
  • Single Class – Includes the registration of goods that fall into a specific category.
  • Multi-Class – This term refers to the registration of goods that fall into multiple categories.

Who can apply for GI

The following can apply to a GI:

  • Any association of persons,
  • Producers,
  • Organisation, or
  • Any authority established under the law for the time being in force.

In relation to goods for which the Geographical Indication is registered, an authorised user has exclusive rights to use it. The GI tag registration process begins with the submission of an application. According to the Geographical Indications Registry, the "application must be made in triplicate." The application must be submitted to the GI registry's office in Chennai.

The application must contain all the relevant details like –

  • The "principal place of business," defined by Section 3 of the Geographical Indications of Goods (Registration and Protection) Rules, 2002.
  • Backing up the claims is historical evidence.
  • An in-depth description of the item and its intended use.
  • The method of manufacture.
  • Other relevant information for determining the good's GI status.

The application will be scrutinised by the Registry and a panel of experts that they will appoint. If there are any errors, the applicant will have one month to correct them. The Registrar also has the authority to revoke the application if the errors are not updated. After the application is approved, the Registry will publish it within three months of the approval.

Within three months of the GI application's publication, anyone can file an opposition (extension can be provided for another month). The date of applying will become the date of registration once it has been accepted. The applicant will receive a certificate bearing the GI registry's seal. Within three months of the registration of the good, an appeal can be filed with the Intellectual Property Appellate Board.

A few exceptions are listed in Section 9 of the Geographical Indication of Goods (Registration and Protection) Act, 1999, which cannot be registered with the GI Registry. These are the products that –

  • It has the potential to mislead or deceive the public.
  • It may be scandalous.
  • Violate the law in effect at the time
  • May hurt religious sensibilities
  • Are generic, i.e., not one-of-a-kind

Infringement of GI

Infringement of Geographical Indications is subject to the same remedies as trademark infringement. Falsification of a Geographical Indication is also punishable under the (Indian) Geographical Indications of Goods (Registration and Protection) Act, 1999, with a term of imprisonment of not less than six months but not more than three years and a fine of not less than Rs 50,000 but not more than Rs 2,00,000.

Miscellaneous

Important Points Regarding GI Registration

A registered GI is valid for ten years and can be renewed for another ten years by paying a renewal fee. The application should be sent to Chennai's Geographical Indications Registry. For service in India, the applicant must have an address in India. A legal practitioner or a registered agent can generally apply.

Renewal of GI

When a GI expires, a request for renewal can be filed by an authorised user of the GI at any time during the last six months of the previous registration period. Suppose no such request is filed with the Registrar before the expiration of the GI. In that case, the Registrar shall notify the user within one month and no later than three months before the expiration of the GI. Further, the application must be submitted within six months of the expiration of the earlier time period of the GI; failure to do so will result in the cancellation of the earlier time period. The renewal fee for each class of GI is INR 5000.

Transfer of GI

The GI tag cannot be transferred to another user under any circumstances, according to Section 24 of the GI Act. Only in the event of the authorised user's death will the GI's rights "devolve on his successor in title under the law currently in force."

Indian Cases relating to GI:

Darjeeling Tea Dispute

In the present day, India is one of the world's largest producers of tea. The country's production reached its highest level ever in 2015-16, with exports surpassing 230 million kilogrammes for the first time in approximately 35 years. Under British rule, India began to produce tea in large quantities.

The Darjeeling Tea Plantation was established in the 1840s under the supervision of the British in order to compete with the Chinese monopoly on the tea market. The first GI ever granted in India was to Darjeeling Tea Plantation in the year 1840. The Tea Act of 1953 established the Tea Board of India. Under the Trademarks Act of 1999, the Geographical Indications of Goods (Registration and Protection) Act of 1999, and the Copyright Act of 1957, the tea board owns all intellectual property rights.

Since 2003, ITC Limited has operated the 'Darjeeling Lounge' in the ITC Hotel in Sonar. The board filed a suit in the Calcutta High Court, alleging that ITC was infringing on their rights by using the name "Darjeeling Lounge," a registered trademark of the board.

The defendant argued that Darjeeling is the town's name and that it is known for more than tea. The board's tag was over tea rather than the word "Darjeeling." The suit was also barred by limitation because the lounge opened before the Geographical Indication Act took effect. The court ruled in favour of ITC Limited, allowing the board to use its GI tag certification on tea rather than a lounge.

Basmati Rice

Basmati rice is unique rice with long grains and a distinct aroma that distinguishes it from other rice varieties. The Indo-Gangetic Plains are where you'll find it. Basmati rice has been at the centre of a GI war between various states, including Pakistan and the United States.

RiceTec, a Texas-based firm, created 'Texmati' or 'American Basmati,' patented by the US Patent and Trademark Office (USPTO). A few Indian NGOs disputed this, claiming that "basmati" could only be applied to rice grown in India and Pakistan. The NGOs won after presenting all of the evidence, and RiceTec withdrew its central claims.

India and Pakistan have a history of disagreeing on various issues, and GI registration of basmati rice is no exception. The Basmati Growers Association (BGA) of Lahore argued that the Basmati label could only be applied to rice grown in Pakistan's territory. They also claimed that because they have been producing rice for a more extended period of time, they have a greater right to GI registration. Even though India and Pakistan had applied for a joint Basmati GI tag, the efforts were thwarted due to the GBA's stance.

The Agricultural and Processed Foods Export Development Authority (APEDA) wanted registration for seven Indian states, so BGA filed a case with the Intellectual Property Appellate Board (IPAB) in Chennai. According to their website, IPAB is "India's only tribunal with a global impact." The IPAB has directed the GI Registry to grant the GI label to Basmati rice grown in Punjab, Haryana, Himachal Pradesh, Uttarakhand, parts of Uttar Pradesh and Jammu & Kashmir. After years of legislative wrangling, this has finally happened. Madhya Pradesh continues to demand GI registration for rice grown in a few of its districts.

Scotch Whisky

The Scotch Whisky Association (SWA) sued Golden Bottling Limited in 2006 for infringement of geographical indications. The defendant was accused of producing "Red Scot," anallegedly deceptive product to consumers.

The Delhi High Court heard the case of Scotch Whisky Association v. Golden Bottling Limited in 2006. Under the UK Scotch Whisky Act, 1988, and the Scotch Whisky Order, 1990, the term "Scotch Whisky" was given the status of a geographical indication. However, because the same was not granted GI status in India, the court could not use that definition. Unregistered GIs are protected from lawsuits under Section 20(1) of the GI Act. As a result, the only recourse was to sue under the tort of passing off. Outside of the courts, the case was settled. Later, in 2015, the government recognised Scotch whisky under Section 2(e) of the GI Act's definition.

Banarasi Brocade

By securing Geographical Indication (GI) rights, Banarasi silk products have joined the ranks of Pochampalli, Tirupati laddu, and Darjeeling tea under the registered name of 'Banaras Brocades and Sarees.' An application for 'Banaras brocades and saris' was filed by nine organisations: Banaras Bunkar Samiti, Human Welfare Association (HWA), joint director industries (eastern zone), director of handlooms and textiles, Eastern UP Exporters Association (EUPEA), Banarasi Vastra Udyog Sangh, Banaras Hath Kargha Vikas Samiti and Adarsh Silk Bunkar Sahkari Samiti.

Imports of low-cost raw materials have led to the sale of Kela saris in the name of Banarasis. To meet the rising demand, most power-loom owners have been mass-producing cheap imitation products with computerised designs on them. The legal system is further hampered by the unwillingness of GI holders to pursue imitators. Despite stakeholders' awareness of the adverse effects of fake sari sales, complex market dynamics keep everyone silent.

Intriguingly, the GI status was secured with the help of UK-based Find Your Feet, the Department for International Development, and UNCTAD India. Banarasi brocade was granted GI on September 3, 2009. These include silk embroidery, textile goods, silk brocades, silk saris, and dress material. The GI certification ensures that no brocade or sari made outside the six districts of Uttar Pradesh, India, can legally be sold as Banarasi. There are also non-covered textile items like the bed and table covers and silk saris, and dress materials like 'butidar' and silk embroidery saris. The ten-year tag can be extended if necessary. As a geographical indication, it is essential to register it as soon as possible, making it the first tag from Uttar Pradesh's Eastern region, including Varanasi and Mirzapur. The tag's success benefits not only lakhs of handloom weavers but also consumers and exporters, making the fine Indian weave an international mark and ensuring consistent quality. The GI protects weavers' livelihoods, craft, and identity by distinguishing their work from cheap imitations.


"Loved reading this piece by Megha Bindal?
Join LAWyersClubIndia's network for daily News Updates, Judgment Summaries, Articles, Forum Threads, Online Law Courses, and MUCH MORE!!"






Tags :


Category Others, Other Articles by - Megha Bindal 



Comments


update
Post a Suggestion for LCI Team
Post a Legal Query